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Lisbeth Enterprises Limited (the applicant), instituted a revocation action on the grounds of non-use against Procter & Gamble International Operations SA (the proprietor) for the subject mark which was registered in Singapore on June 1, 1981, in Class 3. The goods claimed were “Eau de Cologne, perfumes, essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair.” While the applicant claimed that the mark should be revoked on the grounds of non-use for a continuous period of five years, the registered proprietor claimed that the subject mark had been used on a fragrance line endorsed by the singer Christina Aguilera.

The applicant operates fitness and beauty clubs in the Asia-Pacific region, with branches in Singapore, Malaysia, Thailand and Hong Kong. They applied for the word mark INSPIRE in Singapore, however the subject mark was cited as an earlier mark. Thereafter, the applicant commenced revocation proceedings against the subject mark.

 Inspire1

Subject Mark for Revocation

 

 

inspire2

Mark Being Used by the Proprietor

 

In this respect, the proprietor’s primary defence was that they commenced use of the subject mark prior to the institution of the revocation action by the applicant and that preparations for the commencement of use of the subject mark began before the proprietors became aware that the application for revocation might be made.

While considering whether the evidence of use of the subject mark submitted by the proprietor pertained to use in Singapore, the Registrar examined the dichotomy between the use of the mark on the internet and “the traditional tenet of territoriality in trademarks law.” The Registrar further took the view that the proprietor had taken no “active” steps with respect to the availability of the goods bearing the subject mark in Singapore beyond the listings available on the internet.

The Registrar further examined the date of use of the subject mark as submitted by the proprietor to support use of the mark in Singapore. The proprietor submitted that they had commenced use of the mark in early September 2008 and that preparations for use had commenced in 2007 before they were aware of a proposed revocation action. The revocation action was filed on October 16, 2008, in Singapore. The applicant argued, however, that they had filed a corresponding revocation action against the proprietor’s Hong Kong registration for the subject mark on February 18, 2008, as a result of which the proprietor would be well-aware before commencement of the use of the subject mark in Singapore.

While considering whether the subject mark had been used for the goods for which it is registered, the Registrar found that the subject mark is registered in respect of a wider specification than the use of the mark on the fragrance line endorsed by Christina Aguilera. In view thereof, the Registrar opined that even if the mark was considered to have been used in Singapore during the relevant period, the use would have been confined to specific goods and not for all the goods claimed under the subject registration.

The applicant further argued that the purported use of the mark by the proprietor did not pertain to the registered mark and was instead “INSPIRE”. In addressing this issue, the Registrar examined Section 22(2) of the Trade Marks Act which provides that “….use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered…”.The Registrar opined that “INSPIRE” and the registered mark would be considered to be substantially the same and therefore use of INSPIRE (if any) would be considered to be genuine use of the registered mark.

In considering whether the evidence of use of the subject mark as provided by the proprietor fulfilled all the criteria set out to establish genuine use of the subject mark, the Registrar found that the proprietor was unable to demonstrate genuine use of the subject mark in Singapore and that the grounds of revocation under Section 22(1)(a) and (b) of the Trade Marks Act succeed.

This decision by the Registry further reflects the policy consideration behind assessing genuine use of the mark in non-use revocation proceedings and sets out with clarity the considerations of internet use of the mark (i.e. mere advertisements of the mark on the Internet) as opposed to actual use of the mark (i.e. actual internet sales in Singapore of products bearing the mark), while evaluating bona fide use of registered marks in Singapore.

 

This article was first published in Asia IP on June 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

Bridgestone Corporation (the Opponent), a Japanese tire manufacturer, successfully opposed the registration of R-STONE in the name of Jianxian Rubber Co., Ltd (the Respondent) in Class 12. In support of its opposition, Bridgestone argued that it was the first to use and register BRIDGESTONE in connection with the design, technology and manufacture of tires. Tracing the history of the first “BRIDGESTONE” tire in 1930, the Opponent argued that the ownership and association of the word “stone” as a distinctive element of its house mark BRIDGESTONE was bolstered by the acquisition of Firestone Tire & Rubber, along with the mark FIRESTONE in 1998. The Opponent also claimed that BRIDGESTONE is a well-known mark in view of its numerous trademark applications/registrations across the globe, totaling about 500, in addition to approximately 243 domain name registrations.

 STONE

The Opponent further claimed that it had invested enormous resources in advertising and popularizing its BRIDGESTONE mark in the Philippines, and that the mark had been featured in various newspapers and magazine articles. Also, the Opponent had recently opened a 1,000-square meter showroom and service center in Bonifacio Global City, Philippines.

A Notice to Answer was issued and served on the Respondent on December 13, 2013, but the Respondent did not file an answer. Thus, the Respondent was declared in default.

Ruling in favor of the Opponent, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) noted that the Opponent had consistently used the word “stone” in its marks. It ruled that even if the word “stone” is a common English word, it is neither descriptive nor generic of tire products and therefore is considered distinctive. Consequently, the BLA-IPOPHL said that the Respondent could not use the word “stone” as the prevalent feature of its own mark.

The BLA did not find notable distinguishing features between the competing trademarks and held “that the Opposer’s marks begin with either the words ‘fire’ or ‘bridge’ while that of the Respondent-Applicant’s with a mere ‘R-’ is of no consequence. There is the likelihood of the consumers being confused. Confusion cannot be avoided by merely adding, removing, or changing some letters of a registered mark.”

This decision is consistent with several earlier decisions of the BLA-IPOPHL, in which it sustained oppositions filed by Bridgestone against applications for the marks RIVERSTONE and AUSTONE, both for use in Class 12. The BLA-IPOPHL finally concluded that “the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed.”

Thus, Bridgestone’s ownership over the STONE marks in Class 12 and the distinctiveness of these marks for “tire products” have been further set in stone.

The decision is final, as the Respondent chose not to appeal.

 

This article was first published in INTA Bulletin on June 15, 2015. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.

In Han’s (F&B) v. Gusttimo World [2-15] SGHC 39, Han’s filed an action against Gusttimo for infringement and passing off. Gusttimo simultaneously counterclaimed against Han’s for groundless threats of infringement proceedings and also sought to invalidate Han’s registered trademarks. Both ran businesses in the food and beverage industry in Singapore. The marks in question of both parties are categorized below.

 

 Hans

 

Gusttimo argued, based on Section 23 of the Trade Marks Act, that Han’s marks are incapable of distinguishing their goods and services from that of others and that their marks are not distinctive because they make use of a common surname and should be invalidated. The judge, however, found that even a common surname is capable of distinguishing goods and services. Further, the fact that Han is a surname does not render it being devoid of a distinctive character, as it needs to be evaluated in light of the goods and services in question. Here, it was found that Han’s marks were not descriptive of the goods and services provided. Additionally, the judge held that the stylization of Han’s composite marks was sufficient to give the marks a distinctive character. It was further found that Han’s marks had acquired distinctiveness through use and thus Gusttimo’s counterclaim for this failed.

For Han’s infringement under Section 27 of the act to be successful, it had to show that Gusttimo’s mark is similar to Han’s marks, that they are used in relation to similar or identical goods or services and that there must exist a likelihood of confusion on the part of the public.

The judge found that there was high phonetic similarity between the marks. However, while there was visual similarity between Han’s word marks and Gusttimo’s mark, the level of similarity dropped when the comparison was made with Han’s composite marks, where the stylization of the composite marks emphasized the presence of the other elements in Gusttimo’s mark. The judge also held that the presence of an ’s in Han’s marks caused a marked conceptual dissimilarity with Gusttimo’s mark. Thus, it was held that while Han’s word marks were similar to Gusttimo’s mark, Han’s composite marks were dissimilar to Gusttimo’s mark.

Taking into consideration the goods and services provided by both parties, the judge found that the goods and services here are identical.

The judge went on to find that there was no likelihood of confusion in this instance. Taking a holistic approach, the more important aspects of similarity between the marks are that of visual and conceptual, which had earlier been found to be lacking. The survey results that had been produced by Han’s to evidence confusion were disregarded due to deficiencies in the conduct of the survey. It was also held that the reputation of a mark does not necessarily mean that there is higher likelihood of confusion as it may well work in the opposite direction. Here, the judge held that the success of Han’s chain was bound with the prominence of Han’s marks and this militated against any confusion occurring especially when the similarity between the marks were marginal. Accordingly, Han’s claim for trademark infringement was dismissed.

Han’s claim for passing off was similarly dismissed by the judge. Given the evidence before the judge, it was found that Han’s had established goodwill in Singapore, the first requirement for a claim in passing off. Han’s then failed to establish that there was misrepresentation caused by Gusttimo that created a likelihood of confusion. Gusttimo had given evidence showing that there was no deliberate deception in coming up with the name Han. It was also held that there was a marked difference between the sections of public targeted by both parties and this greatly reduced any likelihood of confusion. This point was bolstered by the difference in the fare and dining experience provided at the restaurants of the respective parties. As such, it was found that there was no misrepresentation that gave rise to any confusion and thus, Han’s action for passing off failed as well. Gusttimo’s counterclaim that Han’s made a groundless threat of infringement proceedings under Section 35 of the act failed simply because the letter from Han’s that was relied on by Gusttimo had been in relation to infringement arising from the application of the mark to the goods and the supply of services under the mark and thus was not groundless.

This case reasserts the fact that surnames are capable of being registered as a trademark. Further, the outcome of this case goes to show how even subtle differences in the appearance of a trademark can go a long way in distinguishing it from another mark, that at first glance may be deemed to be identical or similar to it.

 

This article was first published in Asia IP on April 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .

 

 

 

 

Festina Lotus S.A (Proprietor) is the registered proprietor of the FESTINA mark. While the Proprietor does not have any business presence in Singapore, it claimed to have offered goods for sale online through various third-party websites, namely www.bodying.com, www.watchshop.com and in particular, www.brandsfever.com (Brandsfever), which is accessible by Singapore consumers.

The Proprietor furnished evidence of “genuine use” by various third parties of (i) website printouts, (ii) photographs of the mark and (iii) a letter from the director of Brandsfever of actual sales that had been tendered, thereby concluding that their goods had been offered to the Singapore public.

Romanson Co. Ltd (Applicant) applied for revocation of the FESTINA mark under Sections 22(1)(a) and (b) of the Singapore Trade Marks Act (Act), which provides that the registration of a trademark may be revoked if genuine use of the mark in the course of trade in Singapore has been suspended for an uninterrupted period of five years, unless there are “proper reasons for non-use.”

The Applicant relied on the evidence put forward by the Proprietor to argue that there was no genuine use in the course of trade in Singapore. The Applicant submitted that “genuine use” requires more than merely token use and is a question of fact, and that the Proprietor had not taken “active steps” to market the goods in Singapore.

 festina

The Applicant also submitted that the use shown by the Proprietor was insufficient because third parties do not have control over the use of the FESTINA mark. Further, the Applicant had commissioned a third party to conduct a market investigation on the use or non-use of the mark, and the investigator had arrived at the conclusion that there was no “relevant use” by the Proprietor of the FESTINA mark in Singapore.

In light of the evidence submitted, the Assistant Registrar said that use on the Internet may constitute genuine use even if there is no evidence of actual sales being made. However, the commercial exploitation of the mark has to be real. Token use or simulated use intended only for the mark’s protection and registration maintenance is insufficient to establish “genuine use.”

The Assistant Registrar also found that there was no “consent” by the Proprietor to the use of the FESTINA mark by the third parties for the purposes of Section 22(1) of the Act.

Assessing the circumstances of the case, the characteristics of the market concerned and the scale and frequency of use of the mark, the Assistant Registrar was convinced that the Proprietor did not put FESTINA to genuine use in the course of trade in Singapore and there were no proper reasons for non-use. Hence, the registration of the mark was revoked. Romanson Co., Ltd. v Festina Lotus, S.A. (February 6, 2015, SGIPOS 3).
 
This case highlights the importance of putting a mark in genuine use in Singapore. Mere use of a trademark on the Internet without any active step on the part of the proprietor is not sufficient to overcome a revocation action.

 

 

This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

PT Gudang Garam Tbk is a leading manufacturer of Indonesian kretek (clove cigarettes) and other tobacco products. Gudang garam means “salt warehouse.” The design of the company’s cigarette pack was conceptualized by its owner, Surya Winowidjojo, in 1956. By the end of 1958, the business had 500 employees producing 50 million kretek annually. Today, Gudang Garam is listed in the Jakarta and Surabaya Stock Exchanges. It has at least 79 trademark registrations for Gudang Garam and its variants in Indonesia, mainly in Class 34, covering the following goods: “kreteks cigarettes, cigarettes, white cigarettes, cigars, tobacco, ashtrays, cigarette holders, matches, lighters and kind of goods, tobacco sauce.” 


 Gudang Garam

 

The earliest registration was secured on July 16, 1980, under registration no. 147543 in Class 34 covering kretek cigarettes.

In 2005, H. Ali Khosin (Khosin) secured a trademark registration for the GUDANG BARU mark in Class 34 for “Cigarettes” (Registration No. IDM000381985) and the GUDANG BARU & Device mark in Class 34 for “Cigarettes” (Registration No. IDM000381705).

Gudang Garam instituted a cancellation action before the Commercial Court of Surabaya, seeking cancellation of Khosin’s registrations in the name of Khosin based on the following:

(i) GUDANG BARU is similar in its essential part to GUDANG GARAM, which is registered for the same kind of goods; (ii) registration of GUDANG BARU was made in bad faith because GUDANG GARAM is an internationally well-known mark registered for the same kind of goods; and (iii) the phrase GUDANG GARAM was created by the owner of Gudang Garam and is also a legal company name.

The Commercial Court found that Gudang Garam’s trademarks were well known in Indonesia. It also found that the contending marks were similar and that Khosin registered the marks in bad faith.
 
Khosin filed an appeal before the Supreme Court. The Supreme Court reversed the decision of the Commercial Court and held that the contending marks were dissimilar and that there was no likelihood of confusion (162 K/Pdt.Sus-HKI/2014, April 22, 2014). Firstly, it was noted that there was insufficient evidence to support a claim of bad faith. Secondly, the Supreme Court found that the contending marks were similar only with respect to the term “Gudang,” which means “warehouse,” and the term “Gudang,” which, per se, does not possess any distinctive character. As a whole, the marks possessed different shapes, styles and sounds. Hence, the possibility of confusion was remote, said the Court.

This case illustrates that similarity in one component of a mark does not automatically result in a “confusing similarity” between the contending marks.

 

This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

In a decision dated January 2, 2015, the Hearings and Mediation Group, Intellectual Property Office of Singapore (IPOS), declared registration of the trademark under number T1005905C, invalid.


 Red Sun

Redsun Singapore Pte. Ltd (Applicant) had filed with the IPOS an application for a declaration of invalidity against the trademark registration in the name of Tsung-Tse Hsieh (Proprietor). [2015] SGIPOS1.

The Applicant had previously obtained a judgment from the High Court against the Proprietor for passing off, although this was based on a procedural failure of the Proprietor to exchange its affidavit with the Applicant, rather than the elements of passing off being established.

In the present case, the Applicant had initially sought to invalidate the Proprietor’s mark on the grounds of similarity under Section 8(2)(b) of the Trade Marks Act. While the marks appear to be similar, given that both have the common denominator of “RED SUN,” it was held that because they were registered in different classes and for different goods, there was no likelihood of confusion between the two. Hence, the Applicant failed on this ground. However, the Applicant was able to invalidate successfully the Proprietor’s registration on the grounds of passing off based on Section 8(7)(a) of the Trade Marks Act.

To establish passing off, the following points were decided: 

  1. The Applicant had adduced evidence of use and promotion of its mark, RED SUN, in the social media, print media and on air over the radio. Additionally, it had further given evidence showing its annual sales revenue as well as expenses incurred for advertising and promotion. Based on this evidence, it was determined that the Applicant had established goodwill in the business of selling tea and health supplements under the RED SUN mark.
  2. Here, the Applicant sold tea in unprepared forms, while the Proprietor sold ready-to-drink bubble tea through an outlet in Singapore. Nevertheless, as both were selling tea, regardless of the form, the Applicant had proved that it was normal practice for businesses selling unprepared beverages to expand into the field of selling prepared beverages and vice versa. Given the similarity of the appearances of both products, the element of misrepresentation was made out.
  3. Damages were determined by the fact that the Proprietor’s activity meant that the Applicant would be prevented from expanding into the field of commercial activity in which the Proprietor was already active.

 
This case illustrates how a
trademark registration can be invalidated if a claim for passing off based on earlier use of another mark is successfully made against the later mark.

 

This article was first published in INTA Bulletin, Vol. 70 No.6, March 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

金曜, 06 2月 2015 02:10

SINGAPORE: No Break for Nestlé

Société Des Produits Nestlé SA and Nestlé Singapore (Pte) Ltd (plaintiffs) filed an action before the Singapore High Court against Petra Foods Ltd and Delfi Singapore Pte Ltd (defendants) for trademark and copyright infringement. [2014] SGHC 252.

The marks in question are shown in the chart below (right):

nestle

 

The plaintiffs alleged that:

  • The defendants’ product infringes trademark nos. T0000002A and T0000003Z;
  • The defendants’ packaging infringes upon the plaintiffs’ Two Fingers and Four Fingers Shape mark;
  • The Two Fingers Shape and the Four Fingers Shape product and packaging are well known and/or are well known to the public at large in Singapore, and the defendants should be restrained by injunction; and
  • The Two Fingers Shape mark is well known and/or well known to the public at large in Singapore and the defendants should be restrained by injunction from using said shape mark in its 2-Fingers Take-It product.

The defendants replied that:

  • The Two Fingers Shape and Four Fingers Shape ought to be invalidated and/or revoked; and
  • The plaintiffs’ threats of legal proceedings for infringement of a registered trade mark were groundless threats of infringement proceedings under section 35(2) of the Trade Marks Act.

In examining the claims and counter-claims, the Court took the view that even if the defendants had copied the plaintiffs’ product, there was nothing wrong with copying per se as long as the plaintiffs’ rights were not affected.

While assessing registrability of the plaintiffs’ marks, the Court used the “Technical Result Exception” to decide whether the shape of the plaintiffs’ products was necessary to obtain a technical result. The Court held that:

  • The plaintiffs’ marks did not consist of shapes that result from the nature of the goods themselves;
  • The plaintiffs’ marks did not consist of shapes that give substantial value to the goods;
  • The marks were invalid as “each and every one of the essential features of the Registered Shapes is necessary for a specific though different technical result.”

The defendants thus succeeded in establishing that the plaintiffs had not used their registered marks in a manner that is consistent with the essential feature of a trademark, such as: to act as a badge of origin for the products in question. Therefore, the plaintiffs’ claim of trademark infringement failed.

The plaintiffs’ claim that their marks were well known to the public and/or to the public at large in Singapore was also rejected.

This decision is significant, as the High Court clearly articulates that shape marks that are necessary to obtain a technical result are unregistrable and such unregistrable marks will not be afforded protection, even if they are well known in Singapore or anywhere else in the world.

 

This article first appeared in the INTA Bulletin Vol 70, No. 2. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx

 

 

 

 

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The protection of engineering designs by way of copyright and passing-off in Malaysia was dealt with by the High Court in Malaysia in the case of Hexagon Tower Sdn Bhd v Polydynamic Holdings Sdn Bhd & 3 Ors [2005] 4 AMR 384.

In this case the plaintiff company was in the business of manufacturing and selling rubber glove chlorination tumblers, which were named "Chlorination Tumbler". One of its former employees upon leaving the plaintiff went on to form and set up various companies of which he became a director and shareholder. Those companies also manufactured a chlorination tumbler machine, which they called "Powder free PP Tumbler" or "FRP Tumbler". The various companies formed by the former employee became the first, second and third defendants in the suit while the former employee himself became the fourth defendant.

In respect of the fourth defendant's involvement with the plaintiff, he joined the plaintiff as an applications specialist in1990 and went on to be a branch executive in 1994 and left the plaintiff's employment in 1996.

The defendants had in the first quarter of 1998 published and advertised their tumbler in a trade publication being the Malaysian Rubber Glove Manufacturer's Association newsletter, and in their website. The plaintiff's response was that it had the proprietary rights to their chlorination tumbler and to promotional leaflets containing product specification and photographic representations of the tumbler, and they took an advertisement in a leading local English language newspaper to that effect in July 1998.

The Plaintiff's claim

The plaintiff then commenced this suit against the defendants and claimed that it had three causes of action against the defendants:

That the defendants had infringed the plaintiff's artistic and literary copyright pertaining to the plaintiff's tumbler by the defendants' unauthorized and unlawful reproductions of the plaintiff's tumbler;

That the defendants had converted the plaintiff's artistic work and literary work pertaining to their own use, constituting the tort of conversion; and

That the defendants actions constitute a passing-off of the plaintiff's tumbler.

In respect of the plaintiff's claims, the relief sought was a permanent injunction, delivery up and destruction of the infringing products/works, discovery of the relevant documents, damages or an account of profits and costs.

Infringement of Copyright

Subsistence of Copyright

As to the first cause of action being infringement of copyright, the first issue is whether there is copyright as claimed. Here the plaintiff claimed that it was the owner of the artistic works in the form of the two-dimensional technical and engineering drawings and the three-dimensional reproduction of the drawings, being the plaintiff's Chlorination Tumbler. The plaintiff also claimed that the promotional leaflet contained a photographic representation and product specification of the plaintiff's tumbler and that the photographic representation of the plaintiff's tumbler was a literary work, the copyright of which was being infringed by the defendants.

On the artistic copyright issue, the first issue the court delved into by the court was whether the plaintiff's drawings constitute artistic works that are capable of copyright protection. In this respect the court was aided by section 3 of the Copyright Act 1987, which defined "artistic work" as being "a graphic work, irrespective of artistic quality", as well as the definition of "graphic work" which is said to include "any painting, drawing, map, chart or plan".

The court was further fortified by the case of Peko Wallsend Operations & Ors v Linatex Process Rubber Bhd [1993] 1 MLJ 225, where the High Court had determined in the affirmative that two-dimensional engineering drawings were capable of being eligible for copyright protection and more importantly held that "the copyright protection has been extended to cover finished products (three-dimensional) as well which had been manufactured from the drawings." The court therefore affirmed the Linatex decision and held that the plaintiff's tumbler in its three-dimensional form enjoys copyright protection.

Ownership of Copyright

On the issue of ownership of copyright, the court reviewed the evidence and was satisfied that the authors were employed by the plaintiff and the fact that the plaintiff had contributed to the authors pension fund was considered good evidence. The defendants contention that one of the authors was a director of the plaintiff and so could not be considered to be under employment was rejected by the court who upheld an earlier Malaysian decision that a company director can also be under employment, and that the actual job functions have to be looked at to determine whether a person is under employment or not.

Copyright Infringement

The court here found that there was infringement as the plaintiff had not consented to the reproduction and sale of the tumblers and there was clear objective similarity between the defendants' tumblers and the plaintiff's tumblers and a clear causal connection between the fourth defendant and the plaintiff.

The court applied the "objective similarity" test when comparing the defendants tumblers with the plaintiff's tumblers and also held that there was a causal connection between the defendants and the plaintiff as the fourth defendant was employed by the plaintiff, which showed both opportunity and motive for the infringement.

Conversion

As to the second cause of action, the court held that the as defendants had manufactured and sold tumblers that were an infringement of the plaintiff's copyright, the defendants' tumblers were an unlawful reproduction and so the defendants were held to have converted the tumblers for their own use, and were therefore liable for the tort of conversion.

Passing - off

On the third cause of action, the court held that the plaintiff had gained considerable goodwill from the sale of the tumblers as they were selling well and many customers were repeat customers. The court felt that the customer had become accustomed to the get-up, colour, shape, and design of the plaintiff's product specifically in relation to the powderless rubber glove industry.

The court held that the defendants' advertisements in the rubber glove industry newsletter and their website was likely to lead the public to believe that the defendants were offering for sale the plaintiff's tumblers. The defendants' contention however was that customers would go for function rather than shape or design, and that the defendants' tumblers functioned differently. The court however felt that once a customer was familiar with a particular shape or design, he would be inclined to trust an identical or similar looking tumbler.

The court therefore held that elements required in proving passing-off in the English landmark English decision of Erven Warnick BV & Anor v J Towend & Sons (Hull) Ltd & Anor [1980] RPC 31 were fulfilled, and thereby found against the defendants.

Relief

The court therefore granted a permanent injunction and the other relief sought by the plaintiff.

Impact of the case

Although the court's findings in respect of copyright infringement are not ground breaking, it cements the position that there is copyright protection for industrial products by way of three-dimensional copying of the copyright owner's two-dimensional design. This position has been somewhat modified for designs that were created post 1st September 1998 and are created now, but still remains very relevant for a large number of products which were designed prior to that date (as will be discussed below).

The decision in respect of passing-off has important repercussions for companies which may not have design or copyright protection, as it allows an industrial product with an identifiable shape which has been sold for long enough to claim to goodwill and prevent misrepresentation by a passing-off action. The traditional area of using passing-off to protect get-up in terms of packaging is now being broadened by the courts to encompass designs of industrial products. This is a welcome development in the law which gives owners of intellectual property some flexibility in protection.

Change in the law

It has to be noted that the Hexagon case discussed above was filed in 1998, and may not reflect the current position in respect of copyright protection for industrial products. This is as with the coming into force of the Copyright Amendment Act 1996 on 1st September 1998, copyright protection is denied for a design which is capable of being registered as an industrial design, but was not registered as such, and if there was any application of that design to an article and the article has been reproduced more than 50 times by an industrial process. Therefore if there is artistic copyright in a design drawing, but more than 50 articles from that drawing has been reproduced by an industrial process, no copyright protection will ensue as it can only be protected by an industrial design registration.

With the new law, the owner of copyright in design drawings such as the plaintiff in the Hexagon case would only have protection if he had registered his design as an industrial design.

However an important point to note is that the Copyright Amendment Act 1996 contained a saving provision which provided that nothing in the Amendment Act shall affect works in which copyright subsisted immediately prior to the date of coming into force of the said Act, and the Copyright Act as unamended shall apply to such works. Therefore if copyright subsisted in a work prior to 1st September 1998, the three-dimensional reproduction of a two-dimensional design drawing would still be an actionable infringement today. This means that notwithstanding the change in the law a significant amount of industrial products are still protected by copyright.

However in terms of new designs of industrial products, it is imperative that an industrial design registration be done in Malaysia to ensure protection for the owner.

火曜, 06 1月 2015 03:11

The Puzzle of Common “P”

Tao, Hsiu-Chih v. Pirelli & C. S.P.A, [2014] SGIPOS 7

Tao, Hsiu-chih (the applicant) filed Singapore trademark application number T1015606G for the figurative mark Ts.Project (application mark). This application was accepted and published on April 29, 2011. Pirelli & C SpA (the opponent) opposed the application mark on the ground of similarity to their previously registered marks, passing off by the applicant and that the application was made in bad faith.

The opponent relied on their various registered marks and argued that the following marks are visually, aurally and conceptually similar to the application mark.

The opponent submitted that the Elongated P is the dominant component of the opponent’s marks and this Elongated P is “the general impression or significant detail” of the opponent’s marks and the application mark. The Registry, relying on precedents, opined that the Elongated P does not appear original or elaborate and it is likely that an average English-speaking Singaporean consumer may perceive that the letter “P” has primary purpose of accentuating the first letter of the word “Pirelli”.

With regard to visual similarity between the opponent’s first mark and the application mark, the Registry reiterated the principles of examining the marks as a “whole” and stated that the overall resemblance between the opponent’s first marks and the application mark is diminished by the fact that marks consist of words “Pirelli” and “Ts.Project” which are completely different from each other. The opponent’s second mark, which consists only of the Elongated P, was also regarded as visually dissimilar to the application mark as the words “Ts” and “Project” appearing in the application mark are not of “negligible significance” and therefore this mark as a whole is different from the application mark. The opponent’s third mark, the Elongated P with a dot, was also not considered visually similar as the other words appearing in the application mark are not insignificant and therefore despite the common “P” element, the marks as a whole are not similar. The opponent’s fourth mark, the curved “P”, was also considered as visually dissimilar to the application mark.

In relation to aural similarity, the Registrar opined that neither the number of syllables nor the individual syllables between any of the opponent’s marks were aurally similar to the application mark. Moreover, considering that neither the application mark nor the opponent’s mark convey any particular meaning, the possibility of conceptual similarity was also rejected.

With regard to opposition on the grounds of passing off, the Registrar highlighted the established requirements of goodwill, misrepresentation and damage for proving passing off. However, the opponents failed to adduce sufficient evidence to establish goodwill in Singapore, and hence, this claim was not entertained. Moreover, considering that the marks are already considered dissimilar and the applicant and opponent are in different fields of business, the chance of public confusion is unlikely. In relation to the allegation that the applicant acted in bad faith, the Registry opined that the legal burden of proof to show bad faith was discharged by the opponent. Moreover, no evidence or submissions as to why the applicant did not have the right to register the application mark were provided. Hence, opposition under this ground failed as well.

This case primarily clarifies that even if the marks in question have one common element, the marks would not be considered as visually similar, if as a whole, the mark contains elements which would not be of negligible significance.

 

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com/

 

 

 

 

In Syntroleum v. Neste Oil Singapore, the Singapore High Court dismissed two sets of applications filed by the defendant for the disclosure of three categories of documents by the plaintiff in respect of Singapore Patent 172045 (the 045 patent), Singapore Patent 169053 (the 053 patent) and the United States Patent 5,705,722 (the US 722 patent).

The applications stem from two separate suits (with substantially similar issues) instituted by the plaintiff against the defendant for infringement of its petrochemical patents. The defendant denied any infringement and counterclaimed that the patents were invalid by reason, inter alia, of the defendant’s prior sale of its NExBTL product and for insufficiency of disclosure.

In the course of proceedings, the defendant sought the disclosure of three categories of documents; namely, (a) the inventor’s notes in respect of the 045 patent and the 053 patent; (b) the experimentation results obtained by the plaintiff in tests that it performed on the defendant’s NExBTL product; and (c) the experimentation results obtained by the plaintiff in its tests conducted in accordance to the instructions set forth in the US 722 patent.

It is important to note that Order 87A of the Singapore Rules of Court (the ROC) governs proceedings in the Singapore High Court in respect of patents registered under the Singapore Patents Act. Order 87A, Rule 5(2) (3) of the ROC limits the disclosure of documents relating to any ground on which the validity of a patent is put in issue to a period of four years on either side of the earliest claimed priority date.

With regard to the disclosure of inventor’s notes, the defendant argued that they were relevant as evidence of the state of the art at the time of invention and whether steps taken by the inventor were obvious to the ordinary man skilled in the art. Further, the defendant also sought to adduce the inventor’s notes as secondary evidence and to admit the same as evidence of the inventor’s subjective views.

As regards the disclosure of experimentation results obtained by the plaintiff from tests conducted on the defendant’s NExBTL product and the US 722 patent, the defendant contended that the foregoing would show that the plaintiff’s patents were anticipated by the prior art.

In response, the plaintiff raised objections on the ground that the subjective knowledge and intentions of inventors are no longer relevant and should be excluded. Further, the plaintiff submitted that the inventor’s notes and the experimentation results were private documents and do not form part of the publicly available state of the art. Additionally, the plaintiff maintained the position that it had never carried out any such tests on the defendant’s NExBTL product and consequently, there was nothing to disclose.

The court posited that inventor’s notes are discoverable. However, the court added that inventor’s notes should not be discoverable during general discovery unless the issues for which they are required have been especially particularized through pleadings (e.g., the particulars of objections) or through a list of issues. Indeed, as inventor’s notes are secondary evidence pertinent to the issue of obviousness which is an objective analysis, the primary evidence relied upon should be documents that are publicly available. The court ruled that publicly available documents would suffice and accordingly, recourse should not be made to notes by a private inventor unless it is necessary to do so.

Applying the above to the present case, the court found the Particulars of Objections (Amendment No. 2) by the defendant to be devoid of particulars.

The court explained that where the particulars of objections were sufficiently particularized to enable a proper consideration of not just the abstract grounds of challenge but the detailed issues, as well as a discussion of how the inventor’s notes are intended to be used after disclosure, it would not be inconceivable to direct the disclosure of the inventor’s notes as part of general discovery. In this vein, the court underscored the following situations where disclosure of the inventor’s notes could be necessary for the fair disposal of the matter or for minimizing the incurrence of unnecessary costs; namely, (a) where the inventor is called as a witness; (b) whenever specific issues are particularized; and (c) after the exchange of expert reports or the conduct of experiments.

With regard to the disclosure of experimentation results obtained from tests conducted on the defendant’s NExBTL product, it emerged during the course of submissions by parties that the defendant was after the results obtained from tests conducted by the plaintiff on the defendant’s Swedish Patent No. 9700149. Hence, the court dismissed the same.

As to the disclosure of experimentation results obtained by the plaintiff, the court also dismissed the same as it found that the US 722 patent was not cited as prior art. Accordingly, the plaintiff cannot be expected to know that they would be relied on.

This case shows the importance of ensuring that all pleadings are sufficiently particularized to substantiate any and all requests prayed for by parties. Adherence to civil procedure rules is as important as substantive law. As stated by Lord Mansfield in Robinson v. Raley in 1756:

“[t]he substantial rules of pleading are founded in strong sense, and in the soundest and closest logic; and so appear, when well understood and explained : Though, by being misunderstood and misapplied, they are often made use of as instruments of chicane”.

 

This article first appeared in Asia IP. For further information please visit http://www.asiaiplaw.com/

 

 

 

 

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